Patenting computer-based inventions in UK – Clarity or confusion?

Nov 16, 2011

By Adarsh Ramanujan

Many believe that recent developments across the globe may have created some turmoil in terms of the law relating to patenting software-based inventions. This would probably be justified considering, for instance, the inconsistencies in the manner in which the Federal Circuit has considered this issue in the post-Bilski era. This short article, however, focuses on the other side of the Atlantic – the UK.

It would appear that the position of law in the UK , as evidenced in the Aerotel [(2007) RPC 7] and Symbian [(2008) EWCA Civ 1066] line of cases, is distinct from the one enunciated by the Enlarged Board of Appeals in G0003/08 (2010). However, this article will instead focus on a recent decision on the subject-matter – the Halliburton’s case [(2011) EWHC 2508 (Pat)] and the principles laid down therein.

The Halliburton’s case is particularly important for one specific point – the law laid down with regard to the exclusion of patentability for software-based inventions as being a mental process. In fact, subsequent to this decision, in October, 2011, the UK Intellectual Property Office has officially replaced paragraph 8 of the practice notice titled “Patents Act 1977: Patentability of Computer programs” (2008). The new notice actually provides a simple guideline – to follow the test laid down in the decision in Halliburton's Applications.

The Halliburton’s case related to four patent applications directed to improvements in the design of roller cone drill bits for drilling oil wells. The method claims at issue were all directed to simulating drill bit performance. The invention concerned the use of computer simulation to show the interaction of the drill bit with the material being drilled so that the design of the drill bit could be adjusted accordingly. This, obviously, saves significant amount of time, money and resources that would otherwise be used for extensive field testing. The claims themselves did not include any step of manufacturing a drill bit to the design. The method claims were rejected as being computer programs and rules or methods for performing mental acts. The appeal concerned this issue.

In an appeal to the High Court of Justice (Chancery Division), the decision was reversed and it was held that the inventions were patentable subject-matter. In reply to the contention that the method claim is excluded as being a method of performing mental acts, the Court held that what is excluded under the law are only purely mental processes, i.e., “the exclusion will not apply if there are appropriate non-mental limitations in the claim.” The exclusion, therefore, was held as not applicable to all processes that are capable of being implemented mentally; the moment the claim is limited in scope to a process actually being implemented in a computer, the claim cannot be excluded as a method for performing mental acts. Effectively, as per this decision, all computer-implemented methods are ipso facto not acts of mental process.